from the family-flies dept

We discuss trademark disputes centering on the beer and alcohol industry around here because that particular industry is finding itself at something of a barrier centered on how brews are named. Still, one story from a couple of years ago was particularly head-scratching. That story was that of Schlafly beer, made by Tom Schlafly's St. Louis brewery, and the opposition to his trademark application from his aunt and cousin, Phyllis and Bruce Schlafly repsectively. Both family members filed oppositions to the trademark application, claiming that having their last name associated with an alcoholic product would negatively impact them. Bruce is an orthopedic surgeon, making one wonder exactly how bone-shattering Schlafly beer actually is. Phyllis, meanwhile, is a super-conservative commentator with an audience particularly cultivated amongst Mormons and Baptists, therefore an alcohol product with her surname on it would be ultra negative for her commentating business.

Earlier this month, the Patent and Trademark Office dismissed opposition filed by the St. Louis native and her son, Bruce Schlafly, rejecting the argument that a trademark shouldn't be allowed because it's primarily a surname, the St. Louis Post-Dispatch reported. The decision doesn't mean the trademark has been awarded to the brewery, but simply removes an impediment.

The primary argument within the original opposition was that the trademark shouldn't be allowed because it consisted primarily of a surname, but this was really all about the other Schlafly's dislike of the alcohol industry. And that, thankfully, is not a basis for a trademark opposition. The opposition was especially perplexing because a lack of a trademark registration has not to date, and would not in the future, prevent Tom Schlafly from selling Schlafly-branded beer. What it would do is prevent anyone else from also doing so, meaning that preventing the trademark would potentially allow more exposure for the name to be used on alcohol products, not less.

Despite the opposition running counter to Phyllis' desires, she apparently may not be done with this just yet.

Phyllis Schlafly, who will turn 92 on Monday, declined comment, but her son and attorney, Andy Schlafly, said he may appeal.

"I'm disappointed that the decision did not come to terms with the purpose of the statute that generally prohibits obtaining a trademark in a last name," he said.

Must be a fun Thanksgiving dinner at the Schlafly house these past few years.

Reader Comments

"Both family members filed oppositions to the trademark application, claiming that having having their last name associated with an alcoholic product would negatively impact them"

It's a fairly typical mindset among the people who love to use and abuse IP laws, but just because they have something, that doesn't mean it's exclusive. It's theirs, but it's not *theirs*. Other people have the same rights though birth or marriage to the name as they do. One person decides to use that name to be synonymous with ignorance and bigotry, another decides to make a beer. That's their right either way, neither party should be able to block to other just because they're embarrassed by the name.

Re:

I am hoping she will win. This would make it easier for my lawsuit against Lloyds of Hollywood, Lloyds BBQ sauce, etc and anyone named Lloyd in the movie industry where Lloyd was put up on the screen....

Re: Which is more shocking?

Imagine if politicians started suing their relatives and in-laws for being embarrassing, drunk, crazy, in jail, or whatever. This would hit McGovern, Carter, Reagan, Obama, Palin, Trump... what I find remarkable is the way that American voters seem to truly believe that every person is an individual, responsible only for their own actions.

What statute?

What statute is she referring to in the last quote? Is there really a statute that prohibits trademarks on surnames? If so, the folks at Anheuser-Busch (or Coors, or Chevrolet, or Ford, or ....) may be in for a surprise. I do not recall hearing about this before, so I am genuinely curious if such a standard exists on trademarks and surnames. It is hard to imagine that Phyllis Schlafly would just make something up out of thin air.

Re: What statute?

Here's an explanation I found of the law:

A mark that is primarily a surname does not qualify for placement on the Principal Register under the Lanham Act unless the name has become well known as a mark through advertising or long use—that is, until it acquires a secondary meaning. Until then, surname marks can only be listed on the Supplemental Register. To register a mark that consists primarily of the surname of a living person (assuming the mark has acquired secondary meaning), the mark owner must have the namesake’s written permission to register the mark.

Re: Re: What statute?

Thank you! That is helpful.

According to this definition then, Phyllis Shlafly's long time use of her name in her "The Phyllis Schlafly Report" would make it possible for her to trademark the name even as they refuse to mention the full meaning of the statute.

Re: Re: Re: What statute?

Yes, it would -- but that wouldn't necessarily have an impact on the brewery's use of the name. Trademarks are industry-specific.

If I have a trademark on, say, the name of a publication that does not preclude a company in a completely different business from registering the name as their trademark as well. (That's the legal baseline, but in practice there are a number of gotchas that make can make this a bit sticky.)

As an example, remember the trademark dispute between Apple Records and Apple Computers? Apple Computers won and were able to keep using the name because they weren't in the music production business (at the time! After the iPod was released, Apple Computers and Apple Records reached an arrangement).

if she had just kept her mouth shut...

...it's likely that no one would really make the connection that she is even related to the guy making beer. But now there are going to be quite a few Google hits where her name is now linked to the brewery. Good job!

Re:

It seems pretty clear to my mind - the other Schlaflys couldn't do anything about a business elsewhere in the country. Plus, while it's small, the chances of the clients/congregation of those people coming across the beer was low.

Then, the brewery applied for a trademark. That indicates 2 things - one, a potential desire to grow and thus increase exposure. The second, is that they suddenly have a way to attack the brewery. They can't stop it making beer, but if they stop it from getting a trademark then maybe they can force a name change, which they couldn't do until the trademark was in play.